Another Legend is Claimed – CRIPPY™

Yesterday I wrote about the “legend” of MYAKKA GOLD and how old brands can unexpectedly reappear.  Today, I learned that another Floridian has reached back to claim rights to yet another “legendary” brand.  This time, it’s CRIPPY.

Yes, that “crippy.”  The “crippy” that the highly-respected Urban Dictionary has defined as “High quality grade Marijuana, usually from Florida.”  The “Crippy” that Pitbull described in his 2007 “Sticky Icky” treatise as “I need that sticky icky, that Miami crippy; That Washington high purple, watch out that thang will hurt you.”  No matter your definition source, “crippy” has for years been considered a “Florida thing” – sometimes as a synonym for “dank” cannabis and sometimes as the name of a specific strain, but in both instances, it’s something originating in Florida.

Despite this pedigree, a Florida-based applicant has recently scored Florida state trademark registrations for:

SUNSHINE CANNABIS – CONSULTING, PATIENT EDUCATION & ADVOCACY SERVICES IN ALL ASPECTS OF THE LEGAL FLORIDA MEDICAL CANNABIS INDUSTRY

SUNSHINE HAZE – (According to Sunbiz’s record detail, the registration covers “A UNIQUE MEDICAL CANNABIS VARIETY.” However, the application actually claims: “A unique Medical Cannabis variety, and preparation thereof for vaporizing or other means of Medical usage by Florida Cannabis patients containing Cannabinoids, Terpenes, Oil, Flowers, Leafs, Stems, and all plant parts or derivatives thereof as permitted under Florida law.”)

SUNSHINE KUSH – (According to Sunbiz’s record detail, the registration covers “A UNIQUE MEDICAL CANNABIS VARIETY.” However, the application actually claims: “A unique Medical Cannabis variety, and preparation thereof for vaporizing or other means of Medical usage by Florida Cannabis patients containing Cannabinoids, Terpenes, Oil, Flowers, Leafs, Stems, and all plant parts or derivatives thereof as permitted under Florida law.”)

TRIANGLE KUSH – (According to Sunbiz’s record detail, the registration covers “A UNIQUE MEDICAL CANNABIS VARIETY.”  Application not available.)

GAINESVILLE GREEN – (According to Sunbiz’s record detail, the registration covers “A UNIQUE MEDICAL CANNABIS VARIETY.”  Application not available.)

CRIPPY – (According to Sunbiz’s record detail, the registration covers “A UNIQUE MEDICAL CANNABIS VARIETY.”  Application not available.)

The applicant even proudly posted this (and who can blame them, it is certainly a victory worth celebrating):

Since this post is focused on CRIPPY, let’s look at that registration.  It indicates that the mark was first used with a “unique medical cannabis variety” on December 13, 2013.  Why is that date important?  Well, it establishes the priority date for the trademark owner so that if anyone was selling similar goods with a similar name prior to that date, they would have senior rights.  Florida’s low-THC “Charlotte’s Web” law wasn’t even on the books in 2013, so I am not clear on how the CRIPPY applicant actually used the mark in commerce in 2013.  At the federal level, a “use in commerce” must be a lawful use (thus the current inability to register many cannabis marks via the United States Patent and Trademark Office).  See, e.g., FN Herstal SA v. Clyde Armory Inc., 838 F.3d 1071, 1086-88 (11th Cir. 2016) (discussing lawful use requirement for federal registration).

So, would a 2013 sale of CRIPPY in Florida be a lawful use?  Does Florida’s trademark statute even have a lawful use requirement?  Was there a medical cannabis variety in Florida named CRIPPY in 2013?  Those answers are very relevant to the viability and enforceability of these registrations.

I know nothing about this applicant, and there may very well be some factual scenario that makes these registrations perfectly legitimate.  However, from a high-level view, CRIPPY, and perhaps others in the list, have been known cannabis strains since well before 2013.  Does that mean someone can’t or shouldn’t try to claim rights to them now that cannabis is a good which can be legally bought and sold in Florida under certain circumstances?  Those are tough questions, but trademark registrations are not like amassing domain name registrations where entrepreneurs register domain names for the hope of subsequent sale or use one day.  I am not suggesting that this registrant is treating trademarks as such – I’m just using domains as an example of an “IP-ish” asset that can be dormant and still have value.  In Florida, to receive a trademark registration, you must be offering the goods or services for sale under the mark before you obtain a registration.  There is no “intent to use” path like there is at the federal level.  Was this cannabis strain being lawfully sold in Florida in 2013?  I don’t know.  Regardless, if a licensee or anyone else who might be authorized to sell branded cannabis has the ability, or even the right, to re-purpose legendary strain names into single source-identifying brand names (which is what trademarks do – identify a single source for goods or services), should they?

Is your buddy from college who used to sell you CRIPPY in the 1990’s going to challenge this trademark registration? Of course not, but it shows the mess that is slowly building despite the tightly-controlled vertical-integration model Florida has established.

I wrote this in 2014:

So, what is the Florida-based medical marijuana entrepreneur to do?  State trademark registrations are an option, but Florida does not recognize “intent to use” applications like the USPTO does.  This means that even if you are planning to open a dispensary, nursery, or other marijuana-related establishment once the regulations are drafted and licenses are issued, you cannot apply for the state trademark registration now because you cannot yet legally run a medical marijuana facility in Florida.  The flood of state applications that will occur on Day 1 will be astounding, and anyone who has used Florida’s state registration system knows that this impending flood just might break the system.

 

While the system might not have broken yet, I do think that we are headed toward increased brand (and registration) tension because of registrations like these, and it’s unclear at this stage if the law, the market, or both will need to step in for a correction.

BONUS CONTENT:  I posted that this applicant received state trademark registrations, so why didn’t I use the “circle-R” registered trademark symbol in the title of this post, instead using the “TM” symbol after CRIPPY™?  Because only owners of federal trademark registrations can use the circle-R symbol.  State registrants are still limited to the “TM” or “SM” symbols, which typically identify “common law” uses when dealing with federal marks.

 

The Legend of the Legendary Brand

In my cannabis-trademarks presentations, I have some slides showing companies who have used mutations of “famous” brands such as Reese’s and Hershey’s to sell cannabis-related products.  The cannabis manufacturers generally think this is “parody” and allowed, but it’s usually not, and the non-cannabis brand owner typically wins based on trademark infringement and/or dilution.

There are also companies trying to recapture the legendary and murky past of cannabis strains.  For example, there have been federal trademark applications for PANAMA RED and other well-known cannabis strains.

Today, I read about another trademark/branding issue.  I won’t repeat the entire story since it was well-told HERE, by Gary Stein.

In a nutshell, a pre-legalization-boom pioneer grower in Florida became associated as the source of a particular strain, MYAKKA GOLD.  Fast forward a couple of decades that included prison time, the destruction of all MYAKKA GOLD genetics, and a pardon, and we now have legal cannabis in Florida.  According to Mr. Stein’s article, one of Florida’s licensees, Surterra, has named its product MYAKKA GOLD.  In fact, the entire brand is built around “the legend” of “Florida’s Finest”, namely, MYAKKA GOLD.

Donnie Clark’s 2013 book as available on Amazon

Legally, the company may be in the clear.  If nobody else is using that name as a mark, or if it was being used and has been abandoned, then it’s quite possibly free for the taking.  But here’s where trademark law concepts become important.  The purpose of trademark law is to protect consumers from confusion as to the source of the goods.  When you buy a Pepsi, you expect it to taste like the same Pepsi you’ve always known and loved.  This is also why companies who license their trademarks to other manufacturers must exercise quality control – the Kit Kat you buy from Factory A should taste like the Kit Kat from Factory B.

Surterra’s “Myakka Gold” as advertised at floridasfinest.com

In this case, we see how important branding can be with regard to cannabis.  This is a snippet from the article quoting Donnie Clark, the alleged founder of MYAKKA GOLD:

“They never talked to me. They never even called me.,” Donnie said. The Feds destroyed every bit of what he had, down to the seeds. “Besides, I saw that description on the internet. First thing that hit me was that they say it’s an indica(hybrid). It was not damn indica! It was straight sativa!” And as far as the terpene profile, that mixture of organic chemicals that give the plant its unique taste, smell and effect? According to Surterra, their Myakka Gold has a, “unique terpene profile of low Myrcene, and high limonene gives it characteristics of Sativa. It also has a high percentage of Caryophylene thanks to its Indica parents. This Florida Original has a complex pine and berry aroma”. According to Donnie, “Nah”.

Note that Donnie said that MYAKKA GOLD was a sativa whereas the new user of the name is saying that it’s an indica hybrid.  Also, the terpene profile was different.  This can be extremely important for patient safety, expectations and consumer confusion purposes.  If the public has come to identify MYKKA GOLD as having characteristics ABC, and this MYKKA GOLD “2.0” has characteristics XYZ, then trademark law fails.  Of course, in this instance, (federal) trademark law is of no help because cannabis remains illegal at the federal level.  Under Florida state trademark law, the new user might be able to get a registration, but we’re still left with a possible misappropriation of “the legend.”

I think we will see more of this as brands try more unique ways to engage with consumers via backstory and “legend.”  See, e.g. www.garrisonlane.com (not as an example of misappropriation but as an example of the hyped backstory as sales tool).

BONUS CONTENT:  There was a federal trademark application approved in 2014 for MYAKKA GOLD for use with rum, but the applicant never followed up with providing specimens of use.

BONUS EXAM QUESTION:  There is a Myakka River in Florida.  Does that change the trademark analysis?

UPDATE: Another Cannabis-related Trademark Registration in Florida

Continuing the list of Florida state cannabis-related trademark registrations:

WEED LOVE TO BE YOUR DOCTOR. DOCMJ & DESIGN OF A DOCTOR’S STETHOSCOPE INSIDE A “MEDICAL CROSS” (logo)

Class 44: PHYSICIAN SERVICES FOR MEDICAL MARIJUANA/CANNABIS RECOMMENDATIONS FOR ELIGIBLE FLORIDA RESIDENTS
Registration Number: 18000000332
Registration Date: March 29, 2018
First Use Date: December 20, 2017
Click HERE for the application paperwork.

Another Florida Cannabis-related Trademark is Registered

Keeping the running list going…

FLORIDA MEDICAL MARIJUANA HEALTH CENTER & DESIGN OF A HALF CIRCLE AROUND A GREEN CROSS, MARIJUANA LEAF AND AN OUTLINE OF THE STATE OF FLORIDA (logo)

flamjcenter-logo

Classes 25, 44, 5: MEDICAL MAJIJUANA RECOMENDATIONS, MEDICAL FACILITY WITH A LICENSED M.D. ON STAFF, SALES OF CBD PRODUCTS. T-SHIRTS, CBD TINTURES, CBD TOPICAL

Registration Number: 18000000212
Registration Date: March 02, 2018
First Use Date: October 10, 2017

Author’s Note:  Yes, those goods & services misspellings are in the registration record.

 

I also decided to link to the registration paperwork in case anyone is interested in seeing how Florida’s paper-based system looks.

Two new cannabis-related Florida trademark registrations

Here’s an update to my original post which presented Florida’s state-based trademark registrations.


COMPASSIONATE CARE OF FLORIDA (logo)

Class 44: MEDICAL SERVICES, NAMELY MEDICAL CANNABIS EVALUATIONS AND PERSONALIZED TREATMENT PLANS

Registration Number: 18000000053
Registration Date: January 16, 2018
First Use Date: August 15, 2017

SUNSHINE CANNABIS

Class 35: CONSULTING, PATIENT EDUCATION & ADVOCACY SERVICES IN ALL ASPECTS OF THE LEGAL FLORIDA MEDICAL CANNABIS INDUSTRY

Registration Number: 18000000080
Registration Date: January 24, 2018
First Use Date: December 13, 2013
Author’s Note:  This is owned by the same registrant for SUNSHINE CANNABIS for Class 25 “clothing” that was presented in my prior post (Fl. State Reg. No. T14000000621).  That earlier registration for clothing is from 2014.  Perhaps an early (and successful) attempt to “reserve” the name for cannabis-related services.

Canna We Register It? Yes We Can!

Florida’s state trademark registration system is, well, “quaint.”  Applicants cannot file trademark applications online – they must be mailed in with 3 copies of specimens.  You can only search the online Division of Corporations trademarks database by searching for the name of the mark or the mark owner, which means that you cannot search by the description of goods or services.

This makes searching for cannabis-related marks a bit difficult.  Because of that difficulty, and because I think my readers will find this interesting, I have compiled a list of all Florida trademark registrations with “cannabis” or “marijuana” in the mark or the goods and services description.  (This is not foolproof as someone could register, for example, SUNSHINE ACME WELLNESS for “medical services” related to Florida’s MMJ system without ever mentioning cannabis or medical marijuana in the trademark application.)

There aren’t many, and you may notice some technical or legal issues with some of the registrations.  Those issues are beyond the scope of this post.  This post is just an FYI list.  Also, many of these would likely not pass muster in other states, and, just because a company or individual might have a live trademark registration for specific goods or services, that does not mean that those goods or services are legal under federal or state law.  (Although, technically, a registration should only cover goods in lawful commercial use.)

Here you go, in no particular order, and with misspellings, etc. preserved:


GRATEFUL MEDS

Class 35 – CONSULTING SERVICES IN THE FIELD OF MEDICAL MARIJUANA/CANNABIS, MEDICAL MARIJUANA/CANNABIS EXTRACTS, FOOD PRODUCTS, NON-ALCHOLIC BEVERAGES

Registration Date: August 06, 2014

First Use Date: April 16, 2014

Registration Number: T14000000866


MJARDIN PREMIUM CANNABIS (logo)

Class 35 – DESIGN SERVICES, CONSULTING SERVICES, AND FACILITIES MANAGEMENT AND OPERATION, ALL IN THE FIELD OF AGRICULTURE

Registration Date: November 19, 2014

First Use Date: June 10, 2014

Registration Number: T14000001247


MEDICAL MARIJUANA TREATMENT CLINICS OF FLORIDA (logo)

Class 44 MEDICAL MARIJUANA PHYSICIAN CLINIC

Registration Date: February 14, 2017

First Use Date: January 20, 2017

Registration Number: T17000000142


COMPASSIONATE CANNABIS CLINIC

Class 44 – MEDICAL SERVICES, THE ASSESSMENT & TREATMENT OF PATIENTS SUFFERING FROM A VARIETY OF CHRONIC & DEBILITATING ILLNESSES

Registration Date: September 25, 2017

First Use Date: December 15, 2016

Registration Number: T17000001172


SUNSHINE CANNABIS

Class 25 CLOTHING

Registration Date: June 10, 2014

First Use Date: December 13, 2013

Registration Number: T14000000621


THE CANNABIS CLINIC

Class 42 – LEGAL SERVICES

Registration Number: T07000000033

Registration Date: January 09, 2007

First Use Date: August 01, 2006


THE PEOPLE WANT IT RATIONAL MARIJUANA LAWS AND A LITTLE JUSTICE

Class 25 – CLOTHING

Registration Number: 920070

Registration Date: December 29, 1978

Author’s Note:  This is no longer active, but I thought it was interesting given the date.  I think we’re still aiming for “rational marijuana laws” 40-years later…


MARIJUANA MUNCHIES

Class 29 – FOODS AND INGREDIENTS OF FOODS

Registration Number: 919314

Registration Date: June 27, 1978

Author’s Note:  This is no longer active, but I thought it was interesting.


ART 420 (logo)

Classes 25 and 41 – ART EVENT, ART SHOWCASE TO CREATE A MARKET FOR CANNABIS INSPIRED ART IN A GALLERY SETTING, MENSWEAR, LADIES WEAR, AND WRISTBANDS

Registration Number: T15000000586

Registration Date: May 27, 2015

First Use Date: March 16, 2015

Author’s Note:  Art420 is run by my friends and colleagues, Tamieka and Erik Range. Check them out!  Websites: Art420 and Range Law Firm.


FLORIDA CAN (logo)

Class 41 EDUCATION ON HOW TO CHANGE LAWS, LEGAL SUPPORT, MERCHANDISE, SUPPORTING THE EFFORT

Registration Number: T13000000152

Registration Date: February 05, 2013

First Use Date: October 26, 1998


DESIGN ONLY

Class 44 – MEDICAL PRACTICE PROVIDING PHYSICAL EXAMS AND CERTIFICATION I.D. CARDS FOR FLA. MEDICAL MARIJUANA CARD REGISTSRY; FILING HIPPA COMPLIANT

Registration Number: T14000001054

Registration Date: September 30, 2014

First Use Date: September 01, 2014


KNOX (logo)

Class 5 EXTRACTED CANNABIS, MEDICALLY USED FOR VARIOUS ILLNESSES AND DISEASES

Registration Number: T17000000539

Registration Date: May 05, 2017

First Use Date: December 01, 2016


MARYJANE LEGAL (logo)

Class 42 – LEGAL SERVICES FOR MEDICAL PATIENTS IN PAIN

Registration Number: T17000000757

Registration Date: June 06, 2017

First Use Date: March 23, 2017


MINDFUL MEDICINALS (logo)

Class 5 ALL-NATURAL GOURMET CANNABIS CANDY AND CBD (CANNABIDIOL HEMP OIL) SUPPLEMENTS

Registration Number: T17000000506

Registration Date: April 28, 2017

First Use Date: February 01, 2017


DOC MJ (logo)

Class 44 MEDICAL MARIJUANA RECOMMENDATIONS FOR FLORIDA RESIDENTS

Registration Number: T17000001341

Registration Date: October 27, 2017

First Use Date: August 10, 2016


GRASS ROOTS (logo)

Class 35 – FRANCHISES, CONSULTING, BUSINESS MANAGEMENT, RETAIL SHOPS, SCIENTIFIC STUDY & RESEARCH, WEBSITE, LEGAL RESEARCH ALL IN FIELD OF MARIJUANA

Registration Number: T15000000247

Registration Date: March 05, 2015

First Use Date: January 01, 2014


THE POT DOCS

Class 44 – MEDICAL PRACTICE PROVIDING PHYSICAL EXAMS AND CERTIFICATION I.D. CARDS FOR FLA. MEDICAL MARIJUANA CARD REGISTRY; FILING HIPPA COMPLIANT

Registration Number: T14000001053

Registration Date: September 30, 2014

First Use Date: September 01, 2014


Additional Disclaimers:

  • This list may not be exhaustive, although I hope it is.  There were a couple of registrations with cannabis leaves in logos that I left off the list, but they were either for drug/alcohol addiction programs or criminal legal services.  The purpose of this list was to try and show marks that were related to the new medical marijuana system.  Drug/alcohol programs and criminal defense firms have been using cannabis leaves in logos for years.
  • If you have a cannabis-related brand that you want to use in Florida and do not see it in the above list, DO NOT ASSUME IT IS AVAILABLE TO USE.
  • I may update this list on a rolling basis and may include owner information if there is interest.